Decision Nº O/765/18 from Intellectual Property Office - (Trade market), 28 November 2018
| Judge | Mr M Bryant |
| Date | 28 November 2018 |
| Registration Number | UK00002626480 |
| Administrative Decision Number | O/765/18 |
| Court | Intellectual Property Office (United Kingdom) |
O-765-18
TRADE MARKS ACT 1994
IN THE MATTER OF REGISTRATION NO. 2626480 IN THE NAME OF THE
BRITISH STANDARDS INSTITUTION IN RESPECT OF THE FOLLOWING
TRADE MARK
IN CLASSES 35, 42 AND 45
AND AN APPLICATION FOR A DECLARATION OF INVALIDITY THERETO
UNDER NO 501689 BY OMEGA FLEX LIMITED
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BACKGROUND
1) The British Standards Institution is the proprietor of the above registration (“the
contested registration”) in respect of a mark referred to as the “Kitemark”. It
applied for the registration on 2 July 2012 and the registration procedure was
completed on 11 January 2013. The registration currently covers the following
services:
Class 35: Business consultancy and advisory services; business
practice/business management assessment and advice; business
management services; business management consultancy; analysis of
business management systems; business negotiating and business
representational services provided by an association or organisation for its
members in the fields of safety, product evaluation, manufacturing of
products, quality assurance testing, product development, standards
development and implementation, evaluation of the standards of others
and policy control; provision of information relating to trade, regulations,
requirements and standards; maintenance of registers; database
management services; development and setting of business standards;
facilitation services relating to development and setting of business
standards; development and implementation of business standards;
advisory and information services relating to business standards and
business standards development; systemisation of information into
computer databases; all the foregoing services also available from
computer databases, the Internet or via other communications.
Class 42: Industrial analysis and research services; computer consultancy
services; certification services; certification services including the use of
quality and safety; quality audits; assessment and inspection (quality
control); assessment and inspection of factories and workplaces; advisory,
negotiating, representational and information services; advisory,
negotiating, representational and information services provided by an
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association or organisation for its members; certification of management
systems and product conformity; product approval (quality control); service
approval (quality control); consulting, advisory and testing services
provided to companies in the medical field with relation to their securing
certification that medical devices meet governmental standards for
performance and safety; development of testing methods; quality control,
quality testing and quality assurance services including commodities
inspection; research services; preparation of reports; development of
testing methods; management system software services; business
management system software solution services; calibration
(measuring); engineering; engineering drawing; advisory services relating
to energy efficiency; consultancy in the field of energy saving; industrial
inspection and assessment of factories and workplaces (quality control);
industrial inspection and assessment of factories and workplaces
(surveying services); all the foregoing services also available from
computer databases, the Internet or via other communications.
Class 45: Legal services; consultancy services relating to health and
safety; advisory services provided by an association or organisation for its
members in the fields of government policy control; legal negotiating and
legal representational services provided by an association or organisation
for its members in the fields of safety testing, product evaluation,
manufacturing of products, quality assurance testing, product
development, standards development and implementation, evaluation of
the standards of others and policy control; information services relating to
standards; licensing services; licensing authority services; information
services relating to trading standards; information services relating to
manufacturing standards; legal advisory, negotiating and representational
services provided by an association or organisation for its members; all
the foregoing services also available from computer databases, the
Internet or via other communications.
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